¹ Report of the Committee to consider the Law on Copyright and Designs: Copyright and Designs Law Cmnd 6732. The Chairman of the Committee was The Honourable Mr Justice Whitford.

² The session was held from June 1 to 3. The conference documents are included in the series AGCP/NGO/IV.

³ Title 17, USC (Public Law 94-553, October 19, 1976).

⁴ This term has not been commonly used in Australia until recently. The previous practice was to use the term Industrial Property. This latter term is now generally used to include rights in inventions, trademarks and designs, but not copyright.

⁵ Convention, Article 2(viii) (Stockholm, 14 July 1967).

⁶ These definitions are included in s. 1 of the draft model provisions for a national law on the protection of computer software prepared by the International Bureau of the World Intellectual Property Organization at the request of the Advisory Group of Non-Governmental Experts on the Protection of Computer Programs at its third session in Geneva in May 1976. The text is included in document AGCP/NGO/IV /2. The draft model provisions were discussed at the fourth session of the Advisory Group held in June, 1977.

⁷ It is not true to say that copyright only protects against copying. The scope of copyright protection is frequently misunderstood. The question is discussed hereafter.

⁸ Telefon AIB L.M. Ericsson's Application [1975] F.S.R. 49, 55; (1974) 44 The Australian Official Journal of Patents, Trade Marks and Designs 846.

⁹ Patents Act 1952 (Cth) (as amended) s. 6, definition of “invention”; and s. 35(1 )(aa), form of application, see infra n. 10.

¹⁰ An application for a patent must be “in respect of a manner of new manu-facture the subject of letters patent and grant of privilege within s. 6 of the Statute of Monopolies”: Patents Act 1952, s. 35(1)(aa) (Cth). Australia has been referred to as “... the outspoken opponent of patent protection for computer programs ... “ Pagenberg, “Patentability of Computer Programs on the National and International Level” (1974) 5 I.I.C. 11.

¹¹ (1942) 60 R.P.C. 1.

¹² See, e.g., Bovingdon's case (1946) 64 R.P.C. 20; Standard Oil Development Company's case (1951) 68 R.P.C. 114; cf., Cementation case (1945) 62 R.P.C. 151; Rantzen's case (1946) 64 R.P.C. 63; Elton & Leda Chemicals Ltd's Application [1957] R.P.C. 267.

¹³ (1959) 102 C.L.R. 252.

¹⁴ Id. 269, 271, 276.

¹⁵ [1962] R.P.C. 37.

¹⁶ (1968) 38 The Australian Official Journal of Patents, Trade Marks and Designs 1020, 1021.

¹⁷ The policy is again stated in 1974 in Telefon's case, supra n. 8.

¹⁸ Report of the Committee to examine the Patent System and Patent Law: the British Patent System Cmnd 4407 (1970) para. 225.

¹⁹ Id. para. 229.

²⁰ Id. para. 487; see now, Patents Act 1977, s.1(2)(c) (U.K.).

²¹ See, e.g., the Advisory Group of Non-Governmental Experts on the Protection of Computer Programs. Fourth Session (Geneva, June 1 to 3, 1977), supra n. 2.

²² (1968) 38 The Australian Official Journal of Patents, Trade Marks and Designs 1020.

²³ (1974) 44 The Australian Official Journal of Patents, Trade Marks and Designs 846.

²⁴ See, e.g., Texas Instruments Inc.'s Application (1968) 38 The Australian Official Journal of Patents, Trade Marks and Designs 2846, 2849-2850:

A process, to be patentable must belong to a useful art, as distinct from a fine art. “Fine” and “useful” have not been defined, but a process of mathematical operations performed on a set of curves representing mathematical functions appears to me to lie in the realm of fine arts, in the sense that intellectual rather than industrial activity is involved, and that seems to be the case regardless of whether the operations are carried out mentally, or with the aid of a slide rule, or with any other type of computational assistance.

If a new machine had been invented to solve the problem it would have been patentable.

²⁵ D.A. & K.'s Application (1925) 43 R.P.C. 154; Stahl & Larsson's Application [1965] R.P.C. 596.

²⁶ N.V. Philips Gloeilampenfabrieken (1966) 36 The Australian Official Journal of Patents, Trade Marks and Designs 2392.

²⁷ Fishburn's Application (1938) 57 R.P.C. 245; F.'s Application (1954) 72 R.P.C. 127. Compare Cobianchi's Application (1953) 70 R.P.C. 199 where a pack of Canasta cards was held to be a “manner of manufacture” as there was a working interrelationship in the set whereby the aggregation possessed (with the rules of the game) “something more” than the sum of the individual parts. The application was rejected in Australia for lack of novelty.

²⁸ Slee & Harris's Applications [1966] R.P.C. 194. The decision of the Super-intending Examiner in the United Kingdom was concerned with the corresponding basic applications. Patents were issued following that decision.

²⁹ This argument refers to the interpretation given by the High Court to the “vendible product” test of Morton J. in G.E.C.'s Application (1942) 60 R.P.C. 1.

³⁰ [1966] R.P.C. 194, 196; [1975] F.S.R. 49, 59.

³¹ [1966] R.P.C. 194, supra n. 28.

³² A distinction had been made in the British Patent Office between a claim to “a method of programming a computer” i.e. a computer programmed in a particular way (allowable), and a claim to “a method of controlling a computer” (not allowable) . The distinction was discussed and rejected in Burroughs Corporation's Application [1973] F.S.R. 439, 447. Both forms of claim were considered indis-tinguishable and equally objectionable by the Australian Patent Office: Tele/on A/B LM. Ericsson's Application (1974) 44 The Australian Official Journal of Patents, Trade Marks and Designs 846; [1975] F.S.R. 49.

³³ It is important to remember that the Examiner in the Australian Patent Office is expressly required to examine as to novelty: Patents Act 1952, s. 48(3)(e). This is not the case in the British Patent Office. British patents granted for programmes and methods of programming may therefore be held invalid by a court for lack of novelty should proceedings arise.

³⁴ [1975] F.S.R. 49; (1974) 44 The Australian Official Journal of Patents, Trado Marks and Designs 846. The applicant claimed a method of operating a computer “characterised by a single jump instruction controlling all jumps that might be required in an instructions memory of a computer”. The specification did not require a new or modified computer. It did not describe a new or specific programme in relation to a particular type of equipment or problem to be solved. The invention was concerned with instructing a programmer how to write certain parts of a programme.

³⁵ For a comparative discussion see Pagenberg, “Patentability of Computer Programs on the National and International Level” (1974) 5 1.1.C. 1.

³⁶ [1970] R.P.C. 36.

³⁷ [1970] R.P.C. 91.

³⁸ [1973] F.S.R. 439.

³⁹ [1973] F.S.R. 439, 446.

⁴⁰ A patent had been granted in the U.K. for the invention which was the subject of the application for the Australian patent under consideration in the Telefon case. Mr Asman in the Telefon case emphasized the requirement of Australian law that the Examiner make a report as to novelty. But a process claim directed to a method of operating or programming a computer so that it is modified as programmed to operate in a new way may be a novel claim.

⁴¹ [1975] F.S.R. 49, 57.

⁴² Supra n. 18, para. 483.

⁴³ (1972) 409 U.S. 63.

⁴⁴ Report of the Committee to consider the Law on Copyright and Designs: Copyright and Designs Law Cmnd 6732 (1977) paras. 479, 520.

⁴⁵ The exclusive rights in relation to “works” are included in s. 31(1) of the Copyright Act 1968 (Cth).

⁴⁶ See Part IV of the Copyright Act 1968 (Cth) and, in particular, ss. 97 to 100 (ownership of copyright in subject-matter other than works).

⁴⁷ (1879) 101 U.S.R. 99, 104-105.

⁴⁸ Copyright Act 1968, Part III (Cth).

⁴⁹ Id. Part IV.

⁵⁰ Id. ss. 35(2), 33(2).

⁵¹ Id. ss. 92(2), 98(2), 99, 100.

⁵² Fred Fisher Inc. v. Dillingham (1924) 298 F. 145, 147-148.

⁵³ Copyright Act 1968, s. 14 (Cth). See, e.g., Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964] 1 W.L.R. 273, 288.

⁵⁴ King Features Syndicate Inc. v. 0. & M. Kleeman Ltd [1941] A.C. 417, 424.

⁵⁵ Francis Day & Hunter Ltd v. Bron [1963] Ch. 587.

⁵⁶ See, e.g., the discussion of prior art in Fred Fisher Inc. v. Dillingham (1924) 298 F. 145.

⁵⁷ Copyright Act 1968, s. 35(2) (Cth).

⁵⁸ Id. s. 32(1), 2(c) and (4).

⁵⁹ Sands & McDougall Pty Ltd v. Robinson (1917) 23 C.L.R. 49.

⁶⁰ Supra n. 44, paras. 479, 492.

⁶¹ Copyright Act 1968, s. 22(1) (Cth).

⁶² Id. s. 10, definitions of “artistic work” and “drawing”.

⁶³ University of London Press, Ltd v. University Tutorial Press, Ltd [1916] 2 Ch. 601.

⁶⁴ Copyright Act 1968, s. 10 (Cth) definition of “writing”.

⁶⁵ Anderson v. The Lieber Code [1917] 2 K.B. 469.

⁶⁶ Supra n. 44, paras. 490, 491.

⁶⁷ Id. para. 492.

⁶⁸ Ibid.

⁶⁹ Supra n. 44, paras. 33 and 34.

⁷⁰ Id. para. 34.

⁷¹ Report of the Advisory Group of Non-Governmental Experts on the Protection of Computer Programs, 2nd Session, Geneva, 1975, AGCP/NGO/II/II, 2-4.

⁷² Patents Act 1952, s. 69 (Cth).

⁷³ Copyright Act 1968 (Cth), s. 31(1) (a) (ii) (publication right); s. 31(1 )(a)(vi) and s. 10 (translation right); ss. 37 and 38 (dealings in infringing copies).

⁷⁴ The publication right in s. 31(1) (a)(ii) of the Copyright Act 1968 (Cth) is not a right only of first publication. The definition of publication in s. 29(1) (a) of the Act refers to the supply of reproductions of a work to the public. This is an extensive right of the copyright owner under Australian law. It is a new right in the 1968 Act and it is not clear that it was intended that the right should extend beyond a right of first publication.

⁷⁵ Supra n. 44, para. 496.

⁷⁶ Supra n. 53.

⁷⁷ Supra n. 44, para. 488.

⁷⁸ See, e.g., Nichols v. Universal Pictures Corp. (1930) 45 F. (2d) 119.

⁷⁹ Supra n. 44, paras. 498, 508 and 520(ii).

⁸⁰ Id. para. 499.

⁸¹ Copyright Act 1968, s. 32 (Cth).

⁸² The Conventions require certain minimum levels of protection, but the nature of the protection in a particular case must be sought in the relevant foreign law. It is not, however, necessary to make any application or registration for copyright protection in the member countries. In Australia the 1968 Act is applied to those countries specified in the Schedules to the Copyright (International Protection) Regulations passed pursuant to s. 184 of the Act. The specified countries are the member countries of the two Conventions referred to.

⁸³ Universal Copyright Convention, Article III, 1.

⁸⁴ A report of the meeting appears in (1977) 13 Copyright 271.

⁸⁵ Gotzen, “Copyright and the Computer” (1977) 13 Copyright 15.

⁸⁶ See, e.g., Football League Ltd v. Littlewoods Pools Ltd [1959] Ch. 637 (football fixture lists); Purefoy Engineering Co. Ltd v. Sykes Boxall & Co. Ltd (1955) 72 R.P.C. 89 (catalogues); Mander v. O'Brien [1934] S.A.S.R. 87 (a race programme).

⁸⁷ Supra n. 44, para. 504.

⁸⁸ Id. para. 506.

⁸⁹ Gotzen, “Copyright and the Computer” (1977) 13 Copyright 15, 19.

⁹⁰ copyright Act 1968, s. 31(1)(a)(i) (Cth).

⁹¹ Supra n. 44, para. 507.

⁹² Id. para. 520(ii).

⁹³ Title 17, USC (Public Law 94-553, October 19, 1976). The definition is as follows:

“Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.

⁹⁴ See the recent Report of the Copyright Law Committee on Reprographic Reproduction (the Franki Committee), A.G.P.S., Canberra, 1976. The question of reproduction through computer use was not considered.

⁹⁵ Copyright Act 1968, s. 31(1) (a)(iii), (iv) and (v) (Cth).

⁹⁶ Id. s.10 (definitions of “broadcast” and “wireless telegraphy”).

⁹⁷ Supra n. 93. To “display” a work is defined in s. 101 as “to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially”.